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INTA Bulletin


January 15, 2018 Vol. 73 No. 1 Back to Bulletin Main Page

Sweet Decisions: A Roundup of German and European Confectionary Case Law


The confectionery industry—which dates back as far as the 18th century—has had much practice at building brand value and defending core products. As a result of its long history, conflicts in this sector are common, and there are consequently many interesting cases concerning trademarks in Class 30 that can be informative for practitioners dealing regularly with this sector.

Word Marks: Chocolate, Fruit, and Honey

The company Excalibur City s.r.o. filed an application for registration of an EU trademark for the word sign MERLIN’S KINDERWELT. Ferrero S.p.A. opposed the mark, relying on two earlier Italian word marks for KINDER, which were registered in Classes 30 and 41, respectively. EUIPO’s Opposition Division rejected the opposition. The EUIPO Board of Appeal upheld the opposition and held that there was likelihood of confusion between the signs KINDER and MERLIN’S KINDERWELT, on account of their common dominant element “kinder.” 

Excalibur City filed an appeal against this decision with the General Court (GC, T-565/15, judgment dated 9/20/2016 – Merlin’s Kinderwelt). Unlike EUIPO, the General Court did not find a likelihood of confusion between the word marks MERLIN'S KINDERWELT and the Italian trademark KINDER. Id.  The General Court took the position that the word “Kinderwelt” was not the dominant element in the latter sign and that the word mark was also characterized by the word “Merlin.” 

Both parties relied on prior General Court decisions that supported their positions. Excalibur City, which owns the MERLIN’S KINDERWELT trademark, relied on a 2009 case in which the General Court decided that TiMi KiNDERJOGHURT and KINDER were not similar (GC, T-140/08, judgment dated 10/14/2009 – TiMi KiNDERJOGHURT); whereas Ferrero, which owns the KINDER trademark, relied on a 2012 case in which the General Court had acknowledged a likelihood of confusion between the words “Kindertraum” and “Kinder” (GC, T-580/10, judgment dated 5/16/2012 – Kindertraum). Ultimately, the General Court found more differences than similarities in the marks MERLIN’S KINDERWELT and KINDER, and appeared to give more weight to the TiMi KiNDERJOGHURT case. 

The General Court had previously ruled that there was a likelihood of confusion between NATURVAL and NATÜR-BAL (GC, judgment dated 5/3/2015, T-503/15 – Natür-bal).The Hungarian owner of the NATUR-BAL trademark argued that the term was directed only at Turks living in the EU, and therefore no confusion was likely. However, the General Court rejected that position, ruling that a likelihood of confusion cannot be evaluated on the basis of a junior user’s marketing strategies, which may change over time.

Unlike the owner of NATURVAL, which succeeded in its likelihood of confusion case in front of the General Court, Lindt & Sprüngli (Lindt) was not able to prove a likelihood of confusion between CHOCOLETTI and COCOLATI in front of the EUIPO Board of Appeal. The German company CAFEA filed an application for registration of an EU trademark for the word sign COCOLATI. Lindt opposed the mark, relying on its EU trademark CHOCOLETTI. EUIPO’s Opposition Division rejected the opposition due to the low level of distinctiveness of the sign CHOCOLETTI and a low degree of similarity. Likewise, the EUIPO Board of Appeal invoked the weak distinctive character of the earlier sign as a reason to deny a finding of a likelihood of confusion (EUIPO Board of Appeal, decision dated 12/4/2016, R 1806/2015-4 – Cocolati). 

Similarly, the EUIPO Board of Appeal denied a finding of a likelihood of confusion between AERO and AIR COOKIES, both protected for chocolate products. The mark AERO, owned by German-based confectionary manufacturer Ludwig Schokolade, is used to distinguish a special type of chocolate. This kind of chocolate is mixed with gas during the manufacturing process, which results in gas bubbles and makes the chocolate taste airy. The Board of Appeal argued that in the trademark AERO, the consumer recognizes the reference to air chocolate, such that the sign only has a weak distinctive character. In the latter mark—AIR COOKIES—the word “Air” is interpreted as a quality indication for air chocolate or airy cookies. 

The terms “Air” and “Cookies” were considered to characterize the trademark to an equal extent. Solely comparing the component “Air” with AERO would therefore not be allowed because these elements do not dominate the marks. The signs were held to be conceptually similar based on their similar meanings. However, since this similarity is based on the fact that both signs describe different characteristics of air chocolate and airy cookies in various ways—and are as such of weak distinctiveness, it was determined that the consumer would pay very little attention to them (EUIPO Board of Appeal, decision dated 1/18/2016, R 577/2015-1 – Air Cookies).

Similar to the outcome in the COCOLATI decision, the EUIPO Board of Appeal found no likelihood of confusion between SEITENBACHER HAPPY FRUITS and Haribo’s trademark HAPPY FRUTTIS. The fundamental rule that the distinctive and dominant elements should be taken into account when evaluating the likelihood of confusion applied. Here, the Board decided that the latter sign was decisively characterized by SEITENBACHER. The Board further found that any similarity that would be attributable to the shared weak distinctive components of HAPPY FRUITS and HAPPY FRUTTIS would not be sufficient to compensate for the differences that arise from the addition of the word “Seitenbacher” (EUIPO Board of Appeal, decision dated 1/28/2016, R 1556/2015-1 – Seitenbacher Happy Fruits).

Ferrero was able to successfully enforce its BUENO trademark, protected for chocolate wafer bars, in an opposition against the trademark GLUCOBUENO, claiming protection for various goods and services in Classes 5, 29, 30, 32, and 35, to the extent that the opposition was directed against similar products. Ferrero also attempted to enforce its trademark against products that were not similar claiming reputation of their earlier trademark KINDER BUENO, but was not successful in doing so because the Board ruled that there was no evidence that the latter sign took advantage of the reputation of kinder bueno (EUIPO Board of Appeal, decision dated 8/30/2016, R 1349/2015-4 – Glucobueno).

Primarily based on the difference in the word “gold,” the question of a likelihood of confusion between Lindt’s trademark GOLDBUNNY and the sign BUNNIES was denied (EUIPO Board of Appeal, decision dated 1/22/2016, R 922/2015-2 – Bunnies). The EUIPO Board of Appeal reasoned that even if the component “gold” is a promotional designation, it must not be completely neglected in the overall impression. The latter sign begins with the word “gold,” which is therefore recognized in particular by the public since it appears at the beginning of the mark. In addition, the word is understood by the relevant public in Italy, Poland, and Portugal, but the foreign word is not used as such in these countries. 

Complex Trademarks: Chewing Gum, Sweets, and Pick & Mix


Trademarks that contain a figurative element in addition to a word component are described as complex marks.

The General Court recently affirmed a likelihood of confusion of the figurative marks REAL,- QUALITY and Real  Handcooked (GC, judgment dated 2/24/2016, T-816/14 – REAL HANDCOOKED).The reason for this is that the word “real” dominates both signs. Both times, this word element was written significantly larger than the respective additions “Quality” or “Handcooked.” Moreover, the word was placed at the beginning in order to attract the consumer’s attention.

 

For the same reasons as set forth above, the General Court did not see any likelihood of confusion between the figurative mark MERLIN’S KINDERWELT  and the Italian trademark KINDER (GC T-566/15, judgment dated 9/20/2016 ‒ Merlins' Kinderwelt).

The companies Perfetti Van Melle and Kraft Foods, now Intercontinental Great Brands, disputed the sign TRIDENT PURE. Perfetti brought oppositions against the mark TRIDENT PURE based on an entire series of word and figurative marks, which featured the word components PURE WHITE, PURE FRESH, MENTOS PURE WHITE, MENTOS PURE FRESH, or even just PURE. 

 

 

The General Court ruled that there is no likelihood of confusion (GC, judgment dated 12/16/2015, T-491/13 – TRIDENT PURE). Given the descriptive meaning of the word “pure” in the sense of freshness, purity, and the prefixed position of “Trident,” the trademark TRIDENT PURE is predominantly characterized by the component “Trident.” The General Court also noted that chewing gum would be purchased primarily on sight, such that a visual likelihood of confusion is more important than an aural likelihood of confusion. Accordingly, the differences in the trademarks were deemed to be sufficient to rule out a likelihood of confusion.

The figurative trademark B!O of the German discount supermarket chain Penny Market was declared invalid due to a likelihood of confusion with the trademark BO. Even if the public were to pronounce the latter sign as “bio,” on the basis of the exclamation mark, the General Court held that there would be an aural and visual danger of confusion (GC, judgment dated 2/18/2016, T-364/14 – bo).

The General Court has on more than one occasion found that the average Spanish consumer has only a lower level of knowledge of English and would not be not aware of the meaning of the English word “gummy.” For this reason, the trademark GUMMY for chewy sweets was afforded a normal scope of protection by the General Court and Cadbury was able to successfully enforce its trademark GUMMY against Mederer’s figurative mark GUMMY BEAR-RINGS (GC, judgment dated 2/26/2016, T-210/14 – Gummi Bear-Rings).

 

Once again, given the low level of knowledge of English of the average Spanish consumer, a likelihood of confusion was also recognized between the figurative marks LINDT PICK & MIX and PICK & MIX. The meaning of the phrase would not be known in Spain, so this expression was held to be distinctive and to form the dominant element in the earlier Spanish trademark (EUIPO Board of Appeal, decision dated 2/1/2016, R 2677/2014-4 – Lindt Pick & Mix).



The General Court affirmed a likelihood of confusion between the following two images of dinosaurs:

 

The court argued that both trademarks presented a moving, friendly, and happy-looking dinosaur. This created a visual and conceptual likelihood of confusion (GC, judgment dated 4/26/2016, T-21/15 – Image of a dinosaur). The court did not see any risk that a party could create a monopoly for a certain animal species by means of a trademark.

The German Federal Court of Justice (BGH) confirmed a likelihood of confusion between the figurative marks GOURMET BIO and BIOGOURMET (BGH, decision dated 1/14/ 2016, I ZB 56/14 – Gourmet Bio). The Federal Court of Justice attested a normal distinctive character to the older sign BIOGOURMET. Indeed, the word component “BioGourmet” was held to be straightforward for basic food and commercial services. However, the graphic design consisting of green letters and an ellipsoidal border on a beige base would make up for this. A likelihood of confusion was deemed to exist since the graphic elements of the marks appeared very similar.

 

EUIPO affirmed a likelihood of confusion between the trademark HARIBO ORO and the figurative mark ORO. In addition to the company name Haribo, the EUIPO found that the “Oro” element still has an independent distinctive role, and the public could therefore be led to believe that the products marked with the trademarks originated from economically linked undertakings (EUIPO Cancellation Division, decision dated 128/2016, 9803 C – Haribo Oro). 

The owner of the well-known trademark HEIDEL was unsuccessful in a dispute against the use of the trademark HEIDI. The Regional Court of Hamburg declared that consumers associate the word “Heidi” with the well-known literary and cartoon character. This association prevents any likelihood of confusion with HEIDEL. In addition, the public could be relied upon to be paying greater attention since the chocolate products in dispute are expensive (Regional Court of Hamburg, judgment dated 12/11/2015, 327 O 519/14 – Heidi).

 

Shape Marks: Bubblegum Tennis Balls

In a dispute between two trademarks which consist of the image of the packaging of confectionery products, the earlier 3D mark shows a package similar to a can for tennis balls with the inscription “Tennis Balls,” additional descriptive notes, and the indication “ZED.” An objection was raised against this mark on the basis of a figurative mark that shows a tube packaging with the inscription “Tennis Balls” and the indication “Fini.” The EUIPO Board of Appeal did not find a likelihood of confusion, although it acknowledged an aural and conceptual similarity. This is because confectionery products, in particular chewing gum, are purchased on sight. Due to the different shape of the product packaging and the different presentation, the chamber did not find any visual similarity (EUIPO Board of Appeal, decision dated 12/21/2015, R 874/2015-04 – Tennis Balls).

 

Staying Distinctive

With regard to disputes of a low level of distinctiveness, the decisions of 2016 are in line with what had been decided in previous years—it remains hard to enforce the rights of a registered trademark with a low degree of distinctiveness. The mere fact that there is correspondence concerning an element with a low level of distinctiveness is not, for legal reasons, sufficient to give rise to a likelihood of confusion. However, this might be different when the graphical elements of the opposing marks coincide. 

In cases where signs have a meaning in a certain language, the opposing party should carefully decide whether to base the opposition on a national mark. This can influence the outcome of a case as the conflicting marks are examined from the point of view of the consumer located in the territory where the trademark on which the opposition is based has been registered.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.  

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